Discretionary extension of time during patent prosecution

The Intellectual Property Office of Singapore (IPOS) issued a circular in the aftermath of the 11 March 2011 Japan earthquake and tsunami, reminding applicants that "Singapore has various existing provisions in our Patents, Trade Marks and Designs Act and Rules regarding extensions of time" and IPOS "will certainly do our best within the permit of our legislation to assist affected applicants". Under Singapore Patent Law, both as-of-right (automatic) and discretionary extension of time are available during patent prosecution.

 

For discretionary extension of time, the Registrar may grant the extension of time only "if he thinks fit" or that the delay was "unintentional". As there is currently inadequate local guidance on what constitutes an "unintentional" delay or under what circumstances may the Registrar grant a discretionary extension of time, Applicants are often uncertain of their chances of success when applying for a discretionary extension of time.

 

As the provisions in the Singapore Patents Act are based largely on the UK Patents Act, Singapore courts tend to follow UK precedents. Therefore, one may refer to the UK approach for some guidance on this matter. Similar to Singapore, there is no statutory test for discretionary extension of time in the UK Patents Act and Rules. However, the UK Manual of Patent Practice (paragraph 123.37) states that for the general extension of time provision (equivalent to Rule 108 of the Singapore Patents Act), there must have been a continuing underlying intention to proceed with the application or patent. A change of mind regarding whether to proceed on the part of those responsible for its prosecution was held in Heatex Group Ltd's Application ([1995] RPC 546) not to be a legitimate reason for a discretionary extension of time.

 

However, in Sirna Therapeutics Inc's Application ([2006] RPC 12), which related to a request to make a late declaration of priority (equivalent to Section 17 of the Singapore Patents Act), it was held that the requirement to show an intention to file an application in time differed from the test of "continual underlying intention to proceed" above. In Anning's Application (BL O/374/06), which related to a request for reinstatement, the hearing officer interpreted "unintentional" according to its normal English meaning and it was held that although there was a continual underlying intention to proceed, it did not follow that the failure to reply to an examination report was unintentional.

 

Ultimately, each request for discretionary extension of time has its own unique circumstances and has to be decided on its merits. Due to the lack of local judicial precedents, it is unclear how the Registrar or Court determines the granting of discretionary extensions of time but it appears that Applicants stand a high chance of success if they can show both a continual underlying intention to proceed and that failure to meet the statutory deadline was unintentional.

 

 

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Kristian Robinson
krobinson@ecsf-asia.com

 

Jonathan Loh
jshloh@ecsf-asia.com

 

 

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